Chapter §5.04 No Best Mode Obligation in Many Foreign Countries

• Jurisdiction: United States

§5.04 No Best Mode Obligation in Many Foreign Countries

In addition to its subjectivity and litigation cost, lack of international harmonization is another basis for criticizing the U.S. best mode requirement. Many foreign countries, particularly the world's leading industrialized nations, no longer have a best mode requirement.²⁶ For example, the European Patent Convention requires that patent applications be enabling but does not require that they provide a best mode disclosure.²⁷

The foreign patent systems that do require best mode disclosure tend to be developing countries, such as India and Mexico.²⁸ A high percentage of patents granted in these countries are issued to foreign entities. For economic policy reasons, the developing countries require a relatively greater degree of disclosure in exchange for the grant of a patent.²⁹

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Notes:

^[26] See Donald S. Chisum, Best Mode Concealment and Inequitable Conduct in Patent Procurement: A Nutshell, A Review of Recent Federal Circuit Cases and a Plea for Modest Reform, 13 Santa Clara Computer & High Tech. L.J. 277, 279 (1997) (stating that "[u]nlike other patent law standards, such as novelty and infringement, best mode and inequitable conduct have no counterparts in the major patent systems of Europe, Japan, and elsewhere."). Japan may indirectly require best mode disclosures, however. See Dale L. Carlson, Katarzyna Przychodzen, and Petra Scamborov, Patent Linchpin for the 21st Century? Best Mode Revisited, 45 IDEA 267, 284–285 (2005) (positing that Japan effectively requires best mode by requiring "as many examples as possible" but does not invalidate patents for failing this requirement.).

^[27] European Patent Convention art. 83 (15th ed. 2013) ("Disclosure of the invention") (providing that a European patent application merely "shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art").

^[28] See India Patents Act 1970 §10(4) (effective 1995, as amended 1999) (providing that "[e]very complete specification shall-a. fully and particularly describe the invention and its operation or use and the method by which it is to be performed; b. disclose the best method of performing the invention which is known to the applicant and for which he is entitled to...